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Wednesday, 15 May 2013

The theme of patentable subject matter, as laid down by statute and as interpreted by the courts, was the subject of a careful and detailed analysis by Professor Norman Siebrasse in his guest post yesterday on CLS v Alice. By way of contrast with the treatment of this issue in the United States, Norman takes a look at a very recent decision of the Court of Appeal for England and Wales in HTC Europe Co Ltd v Apple Inc[2013] EWCA Civ 451 (Kitchin, Richards and Lewison LLJ var’g [2012] EWHC 1789 (Pat) Floyd J). Writes Norman:

In yesterday’s post I suggested that US case law relating to patentable subject matter is
chaotic because the USSC has attempted to create field-specific exclusions to
patentability using the rule against abstract claims. The only way out is
legislative amendment. But not any legislation will do, as is demonstrated by
EPC Art 52, which prohibits patenting of
“discoveries, scientific theories and mathematical methods. . .methods for
doing business, and programs for computers,” but only when claimed “as such.”
The “as such” caveat implies that if the invention is claimed as a practical
application in a computer system, it is patentable; but if that is so, it
means that computer programs are effectively patentable, and the exclusion is
rendered meaningless. Thus, Art 52 legislatively enacts the same judicially
created contradiction that is responsible for the morass of US law.
Unsurprisingly, UK law is doctrinally equally confused. However, the English
judiciary appear to be less ideologically divided among themselves and, if
the law is still lacking in doctrinal clarity, some practical regularity
appears to be emerging. In particular, it seems from the recent decision of the Court of Appeal for England and Wales (EWCA) in HTC v Apple[2013] EWCA
Civ 451that
computer programs will generally be patentable. In contrast, from earlier
decisions, in particular Aerotel / Macrossan[2006] EWCA Civ 1371, it seems that business
methods will generally not be patentable.

Making a technical contribution?a computer that thinks like a cat ...

European law has
attempted to resolve the contradiction in Art 52 by an appeal to the question
of whether the invention has made a “technical contribution” to the art [44].
As Lewison LJ laments in his concurrence at in HTC v Apple at [143] “[i]nstead
of arguing about what the legislation means, we argue about what the gloss
means.” And as Kitchin LJ forthrightly acknowledges in the lead opinion, “it is
not possible to define a clear rule to determine whether or not a program is
excluded” [45]. While there are a variety of signposts identified by Kitchin LJ,
two in particular point to a fairly generous approach to software patents. One
is that a technical contribution may lie in the solution to a technical problem
“whether that problem lies inside or outside the computer” [49]. A second
point, newly affirmed at the EWCA level in HTC v Apple, is that a
program is likely to be patentable if it “makes a computer a better computer in
the sense of running more efficiently and effectively as a computer” [51].
Together, these guideposts suggest that almost any invention that can surmount
the inventive step and utility hurdles will be patentable subject-matter.

On the facts of
the case, the question of subject matter was raised in respect of patent 2 098 948, in which the inventive concept is to
use a flag in the operating system of a touch-sensitive device, such as a smart
phone, to allow the touchscreen to ignore or accept multiple touches, thus
sending a simplified signal to an application which did not use multiple
touches. The main advantage of this invention is to make it much simpler to
write applications for an operating system that embodies the invention [53]. The
invention is to be implemented in software. The representative claim 1 was
drafted in general terms: “A method for handling touch events at a multi-touch
device, comprising: displaying. . . executing. . . associating. . . ” [31].
This claim was held to be invalid by Floyd J at first instance as being
directed to a computer program as such [Pat 99]. The EWCA reversed on this
point, saying the problem of how to deal with multiple touches is essentially
technical [56], and it is of practical benefit in providing an improved
interface for application programmers [58].

HTC v Apple is not formally inconsistent with Fujitsu
Ltd's Application [1997] RPC 608 (CA) and Gale’s Application [1991]
RPC 305 (CA), but those cases might very well be decided differently today. For
example, Gale’s Application claimed an improved method for calculating
square roots, to be implemented in ROM. In holding this to unpatentable,
Nicholls LJ stated at 327 that “his program makes a more efficient use of a
computer's resources. A computer, including a pocket calculator with a square
root function, will be a better computer when programmed with Mr. Gale's
instructions. So it may. But the instructions do not embody a technical process
which exists outside the computer.” The latter point is now irrelevant, and the
former point is now an important guidepost in favour of patentability.

The EWCA decision
in HTC v Apple provides an instructive contrast with the US Federal
Circuit decision in CLS Bank. “Device” in the ‘948 claim presumably ties
it to a physical device, but it is nonetheless at least as general as the
system claim at issue in CLS Bank, which was held invalid by five members
of the panel. Moreover, in HTC v Apple neither level of court made much
of the restriction to a “device.” As in Lourie J’s decision, the focus was on
the substance of the invention concept, but while Lourie focused on whether
that substance was abstract, the EWCA focused on whether it was a technical
contribution. This is a fundamental difference, and the approach of the EWCA,
as well as being more logical (in my view), is also more favourable to
patentability of software. Thus the tides have turned. The US Federal Circuit
has long extended the boundaries of patentable subject matter, but now it is
retreating, while the English courts were initially more cautious, but have
gradually developed the case law to a more accommodating stance.

4 comments:

Anonymous
said...

Sadly nobody can remember whether there is a doctrine or a philosophy or anything else (or what it was if there were one) behind this wretched exclusion that we have polished to such a gloss. The ironic thing about this decision is that it is patentable because it makes programming easier but a patent on it makes programming more difficult because you have to think of some other way of dealing with the multitouch events. Result!

I am not sure that prof. Siebrasse "gets" the difference between the judicial exclusions arising under 35 USC 101 and Art. 52 EPC. At least, that's what drawing comparisons between the UK HTC v Apple case and the US CLS Bank v Alice suggests.

I have made only a quick search, but the only two European counterparts of Alice's patents in the CAFC case that I found did not even make it out of the door of the EPO. After the Examining Division had refused them, they were both withdrawn after the Board of Appeal indicated that they were not inclined to reverse the first instance finding. The application of the "technical or not" test is pretty straightforward in this case: as business methods are not "technical" since they are listed in Art. 52(2) EPC, what's left in Alice's patents is a standard computer, which is something hardly deserving a patent. Questions, like those who torn the CAFC apart, about what is "abstract", what is "preempted" by a claim and so forth do not arise in the European analysis, which runs smoothly as directed as it is by the statute which says that methods for doing business are not inventions.

I'd venture to say that under the EPC, most US claims which cause rivers of ink in legal commentary about whether or not they are patent eligible are assessed in a far less problematic manner.

The one problem with the "technical or not" approach is that under Art 52(2) also "programs for computers" appear as "not inventions", and it'd take a fairly weird definition of "technical" to cut programs for computers out of it. The solution adopted by the Boards of Appeal of the EPO, which was followed in substance if not in form by the EWCA in the present decision, is to tweak the "technical or not" test to the extent that as long as the program for computer produces a "further" technical effect besides the normal technical processes occurring in a computer executing a program, then the exclusion under Art. 52(2) does not count. As a result, the exclusion for software rarely comes into play unless it is mingled with other issues such as busines methods or presentation of information, and when it could be invoked alone, it is often easier to challenge the claim for plain novelty or inventive step.

Does this correspond to the original intent of the legislator? I don't know. Is this a framework that generates reasonably predictable outcomes? I haven't seen a better one so far.

I think Siebrasse does get the difference, but may have been focusing on the U.S. side of the pond, where business methods have been explicitly allowed by Congress, and this confirmed by their Supreme Court.

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